Practices

The fundamental aim of Nakamura & Partners is to provide our clients with a wide range of highly professional services mainly in the field of intellectual property ranging from acquiring strong exclusive rights up to effectively enforcing the exclusive rights and dealing with legal work relating thereto.
Our firm mainly provides the following services, the details of which are listed below. The outline of the laws and procedures in Japan to protect Intellectual Property Rights can be found here.

Creation and acquisition of intellectual properties

  • Counseling and search assistance related to creation and acquisition of intellectual properties (IPs) such as inventions, utility models, designs, trademarks, new plant varieties, Geographical Indications (GIs), works, and trade secrets
  • Counseling, search assistance, regulatory document preparation, and negotiation related to employee creations of IPs such as employee inventions
  • Counseling, search assistance, IP value evaluation, negotiation, and contract document preparation related to R&D consignment, joint R&D, technological cooperation, licensing-in, M&A, external procurement, venture capitalization, and other open innovation; Applications for registrations of transfers of patent rights, design rights and trademark rights, license thereunder, and pledge thereupon before the Japan Patent Office (JPO); Applications for registrations of transfers of breeder’s rights, license thereunder, and pledge thereupon before the Ministry of Agriculture, Forestry, and Fisheries (MAFF)
  • Counseling, search assistance, negotiation, and document preparation related to contract and legal affairs concerning entertainment and sports

Acquisition and maintenance of intellectual property rights

  • Value evaluation, counseling, and search assistance related to selection and combination of protection methods, and support for protection, of IPs such as inventions, utility models, and new plant varieties
    Support for acquisition of foreign rights for inventions, utility models, designs, trademarks, new plant varieties, and GIs
  • Applications for patents, utility model registrations, design registrations, and trademark registrations, intermediate processing of the applications, appeal trials against rejection of the applications before the JPO; Litigation for cancellation of trial decisions by the JPO for rejection of the applications before the IP High Court
  • Applications for new plant variety registrations and GI registrations before the MAFF; Litigation for cancellation of rejection by the MAFF of the applications before the court
    Applications for renewal of trademark registrations before the JPO

Oppositions, trials and appeals

  • Counseling, search assistance, expert opinion, negotiation, and foreign dispute resolution support related to validity of patents, utility model registrations, design registrations, trademark registrations, new plant variety registrations, and GI registrations
  • Oppositions to patents and trademark registrations, invalidation trials against patents, utility model registrations, design registrations, and trademark registrations, and cancellation trial against trademark registrations due to non-use before the JPO; Litigation for cancellation of decisions by the JPO before the IP High Court
  • Oppositions to new plant variety registrations and GI registrations before the MAFF; Litigation for cancellation of decisions by the MAFF before the court

Exploitation of intellectual properties

  • Support for IP information disclosure and intellectual asset management report
  • Counseling, search assistance, value evaluation, negotiation, and contract document preparation related to monetization such as licensing-out and sales, and collateralization such as pledge of IPs; Applications for registrations of transfers of patent rights, design rights and trademark rights, license thereunder, and pledge thereupon before the JPO; Applications for registrations of transfers of breeder’s rights, license thereunder, and pledge thereupon before the MAFF
  • Counseling, search assistance, negotiation, and contract document preparation related to standardization, business alliance, joint venture, free licensing-out, corporate venturing, and other open innovation
  • Counseling, search assistance, negotiation, and contract document preparation related to open & close strategy
  • Counseling, search assistance, negotiation, and document preparation related to contract and legal affairs concerning entertainment and sports

Dispute resolution related to intellectual properties

  • Counseling, search assistance, expert opinion, negotiation, and foreign dispute resolution support related to infringement of patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, neighboring rights and publicity rights, ownership and compensation of employee inventions, illegal use of GIs, and misappropriation of trade secrets and other violations of the Unfair Competition Prevention Act
  • Counseling, search assistance, negotiation, and countermeasures related to counterfeit goods, pirated goods, harm to reputation, defamation, and disclosure of identification information, on the Internet
  • Litigation related to infringement of patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights, neighboring rights and publicity rights, ownership and compensation of employee inventions, illegal use of GIs, misappropriation of trade secrets and other violations of the Unfair Competition Prevention Act, harm to reputation, defamation, and disclosure of identification information before the court
  • Border enforcement against goods infringing patent rights, utility model rights, design rights, trademark rights, breeder’s rights, copyrights and neighboring rights, and goods violating the Unfair Competition Prevention Act before the Customs
  • Official opinion related to infringement of patent rights, utility model rights, design rights, and trademark rights by the JPO
  • Counseling, search assistance, expert opinion, negotiation, and foreign dispute resolution support related to disputes on IP-related contracts such as R&D consignment, joint R&D, licensing, entertainment contracts, and sports contracts
  • Litigation related to disputes on IP-related contracts such as R&D consignment, joint R&D, licensing, entertainment contract, and sports contract before the court
  • Arbitration and mediation of domain names and other IPs

Other corporate legal affairs

  • Counseling, search assistance, expert opinion, negotiation, document preparation and foreign dispute resolution support related to corporate legal affairs including international transactions and tax matters
  • Litigation related to corporate legal affairs including international transactions and tax matters before the court
  • Commercial arbitration and mediation